Cowparade Holdings Corporation v Kelvin Bentley

[2001] ATMO 126

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by COWPARADE HOLDINGS CORPORATION to registration of trade mark application 816309 (18, 20, 21, 24, 25, 35, 36, 41) - COWS ON PARADE - filed in the name of KELVIN BENTLEY.

Background

Kelvin Bentley ("the applicant") has applied to register the trade mark COWS ON PARADE in respect of a range of goods and services, in the following classes of the International (Nice) Classification of Goods and Services.

18:      Leather keyrings; leather goods
20:      Fridge magnets

21:Household or kitchen utensils and containers (not of precious metal or coated therewith)

1. Napery

2. Clothing footwear headgear

3. Organisation, management and conduct of exhibitions and promotional events for commercial and advertising purposes in relation to charitable fundraising; conduct of auctions and the bringing together for the benefit of others a range of goods namely, artwork, craftwork and sculptures enabling others to conveniently view or purchase those goods, none of the forementioned goods and services being agricultural activities

36:      Fundraising services for charitable organisations

41:Organisation, management and conduct of exhibitions for cultural or educational purposes, education and live entertainment programs performed at or in connection with civic festivals for charitable fundraising purposes, none of the forementioned being agricultural activities or exhibitions of live animals

The application was filed on 6 December 1999.  It was advertised by the TMO on 6 July 2000 as having been accepted for registration.  However, registration has been opposed by Cowparade Holdings Corporation, ("CHC"), an American company responsible for organizing, over the second half of 1999, an event in Chicago called Cows on Parade.

The opposition followed the course set out in the regulations, in that evidence in support was filed and served by CHC.  That evidence is critical in what follows.  It consists of the declaration of Ray Bolwell, with annexures RB1 - RB24.

The applicant elected not to rely on evidence in answer and requested that the matter be heard.  I was assigned, as a delegate of the Registrar of Trade Marks, to hear and decide the opposition.

At the hearing CHC was represented by Andrew Musgrave of counsel, instructed by Hynes Lawyers.  The applicant was represented by its solicitor, Matthew Hall, of the firm of Phillips Fox.  Both representatives made their submissions by telephone.

Evidence

The Bolwell declaration sets out Mr Bolwell's endeavours to promote an event in Australia similar to the one that he became aware, in July 1999, had been held in Chicago.  The Chicago event involved community and/or business organizations in the decorating of life-size fibreglass models of cows.  These cows, at least 300 of them, were then placed on display to attract tourists and customers to the surrounding businesses.  At the close of the event the painted cows were apparently auctioned, with a proportion of the sale price going to charity.

The Chicago event was apparently inspired by a similar event in Zurich in 1998.  Exhibit RB1 is a print-out of the City of Chicago tourism web-page as it was in June 1999, and it seems clear that the city attributes the genesis of this concept to Beat Seeberger-Quin, which I take to be the name of an individual rather than a corporation.  The same source also says that the mark was introduced to the USA under the auspices of the Government of Switzerland.  Exhibit RB4, prepared by Mr Bolwell on the basis of material supplied by CowParade Worldwide Inc, ("CWI"), attributes ownership of the concept to CWI.  Mr Bolwell describes this as "an international organization comprised of Swiss and American concerns".  Who those concerns are is not stated.  It is not clear that they include the Swiss government or Beat Seeberger-Quin.

According to Mr Bolwell, CWI is a wholly owned subsidiary of CHC, the opponent.  Again according to Mr Bolwell, he discussed with Jerome Elbaum, the president of CWI, the formation of a joint venture.  Mr Bolwell's company, Tallebudgera Cattle Company, would ("eventually", according to a letter from Mr Elbaum) enter into necessary contracts to operate what Mr Bolwell describes as CowParade exhibitions, with Mr Elbaum's company, CWI, having final approval.

As to such events, Mr Bolwell declares that he had discussions with the Gold Coast Bureau of Tourism, and subsequently, in September 1999, with the Mayor of the City of the Gold Coast.  In September 1999, Mr Bolwell worked with a firm of consultants, Calcutt Watson & Associates, whom he had engaged to prepare a master plan for a city considering hosting a prospective event.  Such plans were prepared, with input from Mr Elbaum, for the Gold Coast and Melbourne, for the year 2001.  These plans are exhibits RB5 and RB6.  RB7 and 8 are aimed at potential sponsors and outline the benefits of sponsoring either an event or a cow in an event.  RB14 is a copy of a letter sent by Mr Bolwell on 4 November 1999 to the Economic Development Unit of the City of Greater Shepparton.  The letter notes that the city of Shepparton had, at some time before 1 November 1999, already conducted an event involving cardboard and wooden cows.  It also says that the sender, Mr Bolwell, was enclosing a copy of the Melbourne master plan, ie exhibit RB6 to which I have just referred.  RB 24 is a copy of a subsequent letter from the City Council of Greater Shepparton to Mr Bolwell, confirming what is inherent in these materials: that Mr Bolwell was offering to enter into contracts for organizing festivals of the type in question.  RB19 is in a similar line, from Brisbane City Council ("BCC") via its Community and Economic Development area.

Exhibit RB20 is the first document that mentions anything to do with the applicant.  It shows that, by 14 August 2000, BCC had become concerned enough for its solicitor to seek from Mr Bolwell express confirmation that, "your company is the sole entity able to undertake such an exhibition".  BCC's solicitors said that BCC wished to avoid the possibility of being involved in any dispute between Mr Bolwell and the applicant, who was apparently acting jointly with Mary Bentley.  I note, too, that in the view of the relevant council officers, Mr Bolwell was offering to stage an event "under the banner CowParade" where the applicant was offering to "hold the same type of exhibition but under the banner 'Cows on Parade'". 

Exhibit RB4 contains, inter alia, extracts from American newspapers, including the Chicago Tribune, in which an event titled "Cows on Parade" is described.  There is no evidence about the circulation of these newspapers in Australia.  However, I note that Mr Bolwell has declared that the average daily Australian audience for the Oprah Winfrey program, which "had segments dedicated to the Chicago Cows on Parade exhibition", is 700,000.  The relevant episodes of that Chicago-based program were screened in Australia on 8 September, 8 November and 10 November 1999.

Issues and decision

The notice of opposition named a wider subset of the allowable grounds of opposition.  At the hearing, Mr Musgrave formulated the relevant matters into two issues, s 60 (prior conflicting reputation) and s 58 (ownership).

I will deal with the matters in that order.  The first can be disposed of briefly.

S 60 - prior conflicting reputation.

The relevant provision reads:
Trade mark similar to trade mark that has acquired a reputation in Australia

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.  In the current matter, it is the filing date of the opposed application, 6 December 1999.

Mr Hall conceded that the marks used by the opponent, COWPARADE and COWS ON PARADE, were either deceptively similar or substantially identical, respectively, to the applicant's mark.  Mr Musgrave argued that there was, as regards the remaining threshold question, a sufficient reputation in Australia.  He argued that this would have resulted from the spillover of reputation from the Chicago event, plus that from the domestic activities of Mr Bolwell, to which I will come below.

I reject this argument outright.  Mr Hall was very critical of the evidence of reputation in Australia.  In this, I agree with him.  There is very little evidence of any spillover of reputation from the Chicago event.  I have no means of judging if three episodes of a Chicago-based television show, the Oprah Winfrey program, are a significant thing in the forming of public opinion.  However, even if I assume that, among all the overseas news that floods this country, the event in Chicago made a significant impact, it remains to be shown that anyone who knew of that event thought it a proprietorial matter.  There is no evidence of reputation in Australia based on use as a trade mark.  Instead, there is some evidence that, among some Australians, there may be the knowledge that Chicago had, in 1999, a tourism and business promotion event called Cows on Parade, involving artistically decorated fibreglass cows.

This interlocks with the second question, that of deception or confusion.  Unless a significant number of Australians would, at the relevant date, have expected a (hypothetical) Australian event, run by the applicant and operating under a trade mark of COWS ON PARADE, to have any connection with the American one, there could not have been any deception.  It is, I think, well known that some festivals and events are common the world over, and that others are "borrowed" without any serious expectation that the foreign event and the Australian one will have a common origin or control.  Here again, the lack of evidence of a trade mark significance to perceptions about the Chicago event is critical.

The trade mark itself is a factor here.  Parades of cattle are not unusual, for instance as part of shows or fairs.  It therefore does not take a great deal of imagination to see that an event promoted as "Cows on Parade" is likely to involve cows.  What makes the name of the Chicago event somewhat unusual is that the cows in the event promoted by CWI/CHC are replicas, incapable of being paraded unless put onto trucks.  They are, instead, dispersed, and the event is more properly a community cultural festival.  Even so, the opponent's own evidence shows that there was an event involving cardboard and wooden cows in Shepparton prior to November 1999.  The evidence does not suggest that the event was called, for example, Cows on Parade.  But whatever it was called, there is no evidence that any deception or confusion at all flowed from it.  Even though the event was presented in Mr Bolwell's declaration as drawing directly on the one in Chicago, it seems very arguable that the public accepted the Shepparton event was inspired by, rather than controlled by, anyone or anything in the USA or in Switzerland.

I think I am entitled to draw on the detail of CHC's evidence of perceptions in the USA.  CHC presented the evidence and argued that the knowledge originating in the USA had spilled over into Australia.  Although I have said that I am not convinced that this was the case, the evidence is the only relevant material about perceptions in Chicago itself.  I therefore note that, according to one issue of USA Today appearing in the opponent's evidence, the Chicago event was "licenced by the Swiss government", a claim also made by the official Chicago City tourism web page - exhibit RB1.  In other words, even on its home turf, there was some loose linking to another public event, that one in Switzerland.  Yet CHC does not assert that there is a Swiss connection in the Australian events being canvassed by Mr Bolwell.  Neither does CHC assert that it is able to sublicense Australian events on behalf of anyone in Switzerland.  There is a double standard in CHC's claims about deception or confusion: CHC can adopt the name of a Swiss event and cause no deception, but nobody in Australia can adopt the name of an event in Chicago.  I think that any such claims need to be supported by some details substantiating the rights that CHC alleges it has.  CHC, on the contrary, does very little to support the opposition.  Mr Hall was quite critical of the lack of evidence from the alleged owner of the mark and I have to agree.  Some of the assertions Mr Bolwell makes on CHC's behalf would have been stronger if supported by direct evidence from the alleged source.

In total, when I assess the minimal basis on which reputation may perhaps have spilled over into Australia, I must also allow for the fact that this is the sort of trade mark that, if it was known at all, is not likely to easily inspire belief that there is one ultimate controlling entity.  I therefore find no convincing evidence that any significant level of public deception or confusion was likely at the relevant date.

Ownership

It is common ground that for CHC to succeed under this heading, it needs to show prior use of the same trade mark (Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 or 1994 AIPC 91-049) for the same kind of thing. Any small amount of use will suffice, providing it is use of a sufficiently close mark, as a trade mark, for the same king of thing. For the applicant, Mr Hall submitted that the evidence established no actual trade under any trade mark. In the alternative, he reminded me that the applicant's mark is COWS ON PARADE, asserting that any trade mark use by CHC amounts to a use of COWPARADE, COW PARADE or CowParade.

Mr Musgrave, for his part, drew my attention to the Raging Bull case, Woolly Bull Enterprises Pty Ltd v Reynolds, [2001] FCA 261 (2001) 107 FCR 166. There, Drummond J neatly extracted the essential particulars of two very widely recognised authorities.

18  Both counsel relied upon Moorgate Tobacco Co Ltd v Philip Morris Ltd (No. 2) (1984) 156 CLR 414 as showing what was required for there to be a use of the applicants' mark sufficient to answer the respondent's allegation of non-use. Moorgate was concerned with whether what had been done in the course of establishing trading relations between an overseas trader and an Australian trader amounted to a use in Australia of the trade mark of the overseas trader. The specific issue for determination was whether, at the time Philip Morris applied for registration of the mark in question, Moorgate was already the proprietor of that mark for the purposes of s 40 of the 1955 Act because it had previously used the mark as a trade mark in Australia. Moorgate relied on the fact that, in connection with discussions with Philip Morris about the possible introduction of its low tar cigarette in Australia, Moorgate's overseas predecessor, Loew's, sent packets of cigarettes and associated advertising material displaying a version of the mark to representatives of Philip Morris in Australia. In the leading judgment, Deane J said at 433 - 434:

"The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark. It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark ... or that the mark has been used in an advertisement of the goods in the course of trade: ... In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade. In the present case, there was not, at any relevant time, any actual trade or offer to trade in goods bearing the mark in Australia or any existing intention to offer or supply such goods in trade. There was no local use of the mark as a trade mark at all; there were merely preliminary discussions and negotiations about whether the mark would be so used.  The cigarette packets and associated advertising material were delivered to Philip Morris to demonstrate what Loew's was marketing in other countries and what Philip Morris might market, under licence from Loew's, if it decided to manufacture and trade in the goods in Australia and to use the mark locally at some future time.  There was no relevant trade in the goods in Australia and the delivery of the cigarette packets and associated material to Philip Morris did not, in the circumstances, constitute a relevant user or use in Australia of the mark `KENT GOLDEN LIGHTS' for the purpose of indicating or so as to indicate a connexion in the course of trade between the new cigarettes and Loew's." (emphasis added)

19  At the hearing, attention was concentrated on the second applicant's dealings in the period March-April 1996 with Mr Warner of Sanctuary Cove Brewery, a subsidiary of Carlton United Breweries ("CUB"), as establishing that the mark (or the mark with relevant additions or alterations) was used in good faith by the first applicant during the relevant three year period.  The applicants submitted that Mr Burmingham's dealings with Mr Warner of CUB showed that the first applicant had used its mark during the course of those discussions in that it then had an existing intention to offer or supply goods bearing the mark in trade within the second limb of Deane J's dictum in the passage in emphasis in Moorgate.

20  The applicants, in my opinion, misunderstand what Deane J said. His Honour made the comment relied on in the context of explaining what was necessary to establish use of a mark in Australia by an overseas trader, though there was no actual dealing in goods bearing the mark in this country in the sense of no actual sales or offers of sale of the goods here.  The dictum cannot be read in isolation from this context.  Where an overseas trader has in some way committed goods for export to Australia, eg, by actually shipping them or by earmarking them for export in some other way, there will be actual trade in the marked goods in Australia sufficient to show use of the mark here where the foreign goods have been offered for sale in Australia under the mark, though none have yet arrived here.  Further, where such a commitment of the goods has occurred, there will be "an existing intention etc", sufficient to show use of the mark in Australia where the mark has been used, in advertising in this country their future availability for purchase here, though none of the goods earmarked for export to Australia have yet arrived.  Deane J did not say that a subjective intention of the owner of the mark to use the mark in trade at some time in the future was, without more, sufficient to show use of a mark.  What he said was that such an intention, if accompanied by objective proofs of that intention in the form of evidence of action by the mark owner to commit goods bearing the mark to actual trade in Australia, would suffice to show use of the mark here at the time in question, though no marked goods had yet been offered for sale in this country.

21  McGarvie J understood Deane J's dictum as being to this effect in Settef ( Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402).

One issue there was whether an Italian company, Settef, had used its "Riv-Oland" word mark in Australia before 1978 so as to become the proprietor of the mark here and thus entitled to the registration of the mark which it obtained in 1978. McGarvie J said at 417:

"I consider that it follows from the authorities that a mark is used as a trade mark only if it is used with a view to facilitating or promoting the operation of a trading channel which in a business sense had already been opened to Australia. The mark must be used for the purpose of trade ... The forwarding of samples and brochures [in 1967] is not sufficient to indicate that Settef was ready and willing to fulfil such orders as it received from Australia. The purpose of these items may well have been to ascertain whether there was a market in Australia sufficient for it to be worthwhile for Settef to export here. Use of the mark in such preliminary activities would not be a use in the course of trade: Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 59 ALJR 77 at 83."

Mr Musgrave relied on the preparing and distributing of proposal documents and promotional material and on having solicited sponsorship and locations for the undertaking of these events.  He drew support also from Buying Systems (Australia) Pty Ltd v Studio (1995) 30 IPR 517 at 520 and from Malibu Boats v Catanese 2000 FCA 1141.  However, I doubt that soliciting locations for an event, without considerably more, can possibly amount to trade mark use.  The use of the words in question as the name of an event itself is not particularly likely to be trade mark usage, and one needs to look at the supporting documentation to see if, in any of the circumstances, there was a real trade in relation to particular goods or services. 

It is difficult to extend this from goods to services but some help comes from Buying Systems, supra.  In that case, Gummow J found that there was sufficient activity in the sale of subscriptions to a then-unpublished magazine to amount to use.  It should be noted that, at that time, the format of the magazine was still apparently on the drawing board, so that the subscriptions being sold were subscriptions to the intangible.  Gummow J noted, twice, that these early offers culminated, after the critical date, in orders that were successfully filled.  I think this can only be relevant if it is used to show, to paraphrase of the words of Drummond J in Wooly Bull, supra:

a (sufficient) intention, accompanied by objective proofs of that intention in the form of evidence of action by the mark owner to commit goods bearing the mark to actual trade in Australia"

Mr Hall argued that I could not look, here, at events after the filing date to establish use.  I agree that those events cannot, in themselves, found a claim to ownership.  However, I think that they may be relevant in a more limited sense, in testing the bona fides of an offer made before the critical date.  They do not substitute for a serious offer to trade.  However, they may be useful in sorting such serious offers from ones that are mere whimsy - or from "fishing expeditions", as I called them in the original decision under appeal in Studio, supra, and from attempts to ascertain if there is a market, unsupported by attempts to enter it - eg the earliest samples in RivOland, previously quoted.

Perhaps anticipating this, Mr Hall noted that material, even clearly subsequent to the filing of the present opposition, was still conditional, subject to various contingencies.  However, Mr Musgrave relied on the dealings between Mr Bolwell and various entities, attempting to solicit agreement to support an event in Sydney, Melbourne or Gold Coast/Brisbane.  None of these has had a tangible result, though in fairness I should say that it seems, at least as regards the Brisbane event, this is at least partially attributable to the activities of the applicant. 

The Gold Coast was the first city council to be approached, in September 1999.  From the evidence, it is not clear when or even if a Gold Coast Host City Proposal (annexure RB5) was sent to the Council after it was prepared by Calcutt Watson and Associates in early November 1999.  While I presume so, the date has certainly not been shown, let alone shown to have been before 6 December 1999, when the applicant filed the present application

Brisbane City Council was first approached in January 2000, with a proposal that made it clear that Melbourne was the city selected for the first Cow Parade event.  "A Queensland event, based on Brisbane and Gold Coast, could be produced after or in lieu of Melbourne", said Calcutt Watson and Associates.  I think that annexure RB 19 shows that, by 3 April 2000, BCC was aware that Mr Bolwell was offering to set up a particular event, either with or without some involvement with the Gold Coast City Council.  The parameters of that offer are those laid out in the Host City Proposal.  However, this was not sent out until 25 January 2001.

Otherwise, I note that Mr Bolwell had approached the Sir David Martin Foundation, in Sydney, to solicit that organization as a major sponsor of the Sydney event.  He sent this organization a detailed proposal in mid-November 1999.

It is not necessary for me to decide if there is enough in these offers to amount to use of the trade mark.  I believe that there is more certainty in distinguishing the marks of CHC and the applicant.  In all the material aimed at Australian sponsors or local government agencies, it is clear that the event offered by CHC is called CowParade or Cow Parade.  Sometimes a device, either a simple dot or an irregular blotch, is placed between the words but the substance of the words is unchanged by this.  I infer that this material seeks to maximise the perceived links with CWI, said by Calcutt Watson & Associates to be the owner of the Australian Intellectual Property rights in "the CowParade Concept".  Mr Hall argued that the references to Cows On Parade in annexure RB4 were out of step, some sort of aberration in the general thrust of offering to trade in a parcel of CowParade goods and services.  I tend to agree with this.  The general thrust of the material on which CHC has relied is that the events it offers, via Mr Bolwell in Australia, are CowParade or COW·PARADE, whether rendered as one word or two.  Less clearly, it appears that CowParade, as variously rendered, is part of the name of an American organization with some sort of link to an event previously held in Chicago and, less clearly still, links to a similar one in Zurich.  American material more typically refers to the American event as Cows on Parade.

CHC cannot have it both ways at this point: if it draws a demarcation between CowParade and Cows on Parade, this is a good indication that the two marks are not 'the same mark'.  Similarly, now that BCC is aware of a conflict between CHC and the applicant, it is readily able to distinguish between one's entities trade mark and the other's, as the letter from its solicitor shows.  Therefore, while there is no doubt and no argument that the two trade marks CowParade (however spelt) and Cows on Parade are deceptively similar, they do not give rise to a claim of ownership by CHC at the expense of the applicant.  They are not sufficiently close to support a ground of opposition under s 58.

Conclusion

The opponent, CHC, has failed to establish a ground of opposition.  I therefore direct that the application proceed to registration unless, within one month of the date of this decision, the Registrar of Trade Marks is served with a copy of a notice of appeal.  In that event, I direct that registration not proceed until the appeal is either decided or discontinued.

I direct that CHC pay the applicant's costs in terms of the official scale.

Terry Williams
Hearings Officer
Trade Marks Hearings
24 December 2001